`571-272-7822
`
` Paper 31
`
`
`Entered: January 3, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OLD REPUBLIC GENERAL INSURANCE GROUP, INC.; OLD
`REPUBLIC INSURANCE COMPANY; OLD REPUBLIC TITLE
`INSURANCE GROUP, INC.; and OLD REPUBLIC NATIONAL TITLE
`INSURANCE COMPANY,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`____________
`
`Case1 IPR2015-01956 (Patent 6,519,581 B1)
`Case IPR2015-01957 (Patent 6,519,581 B1)
`____________
`
`Before MEREDITH C. PETRAVICK, BEVERLY M. BUNTING, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`ORDER
`37 C.F.R. § 42.5
`
`
`
`1 We exercise our discretion to issue a common paper in each proceeding
`with a joint caption. The parties are not authorized to do the same.
`
`
`
`IPR2015-01956 (Patent 6,519,581 B1)
`IPR2015-01957 (Patent 6,519,581 B1)
`A consolidated oral hearing for IPR2015-01956 and IPR2015-01957
`for U.S. Patent No. 6,519,581 B1 (“the ’581 patent”) took place on
`December 19, 2016.
`In these proceedings, Intellectual Ventures identified itself as the
`owner of the ’581 patent and has participated in each proceeding as the
`Patent Owner. See IPR2015-01956, Paper 20, 3–6. However, Petitioner
`maintains that Intellectual Ventures does not own the ’581 patent and should
`not be allowed to participate in these inter partes reviews. See IPR2015-
`01956, Paper 27, 3. In particular, Petitioner refers to the determination, by
`the United States District Court for the Western District of Pennsylvania,
`that Intellectual Ventures does not own the ’581 patent due to a break in the
`chain of title, whereby the assignment between the alleged assignor
`AllAdvantage.com and assignee Alset did not include the ’581 patent. See
`IPR2015-01956, Paper 20, 3–6. In that decision, the district court concluded
`that Intellectual Ventures lacked standing to bring its patent infringement
`suits against defendants, including Petitioner. Ex. 1017, 24. Subsequently,
`Intellectual Ventures appealed the district court’s decision to the Federal
`Circuit. Ex. 3001. This appeal is currently pending.
`In response to Petitioner’s argument that Intellectual Ventures is not
`the Patent Owner, Intellectual Ventures argued at the oral hearing that if it is
`not the Patent Owner, then these inter partes reviews must be terminated
`because Petitioner has not served the Petition on the Patent Owner, or its
`designated representative, according to the requirements of 35 U.S.C. §
`312(a)(5). See IPR2015-01956, Paper 8, 13–15, Paper 9, 15, Paper 10, 4–5.
`
`2
`
`
`
`
`
`IPR2015-01956 (Patent 6,519,581 B1)
`IPR2015-01957 (Patent 6,519,581 B1)
`At the oral hearing and in previous briefing, Petitioner provided some
`details regarding the service of the Petition. However, for clarity of the
`record in each proceeding, Petitioner is instructed to file a separate paper
`indicating the specific dates on which service under 35 U.S.C. § 312(a)(5) of
`the Petition occurred and the identity of the particular entity that was served.
`This information should be submitted in the form of a list or table with each
`entry providing the date of service and entity or entities served in
`chronological order. For each entity served, Petitioner must also include a
`short explanation for why Petitioner maintains that the service was effective
`and complete. As example is provided below:
`
`1. Service on [DATE] on [ENTITY] was effective and complete
`because . . . .
`2. Service on [DATE] on [ENTITY] was effective and complete
`because . . . .
`
`
`Patent Owner may file a response to Petitioner’s declaration that
`addresses each entry in a corresponding table or list.
`1. Service on [DATE] on [ENTITY] was not effective because . . . .
`2. Service on [DATE] on [ENTITY] was not effective because . . . .
`
`
`Each submission by the parties must not exceed five (5) pages. Petitioner is
`instructed to file this information by January 12, 2017. If Patent Owner files
`a response, it may do so by January 19, 2017.
`
`Accordingly, it is
`
`ORDERED that by January 12, 2017, Petitioner files in each of
`IPR2015-01956 and IPR2015-01957 respectively a list or table (not to
`
`3
`
`
`
`IPR2015-01956 (Patent 6,519,581 B1)
`IPR2015-01957 (Patent 6,519,581 B1)
`exceed five (5) pages) describing the service of the Petition pursuant to 35
`U.S.C. § 312(a)(5) in chronological order; and
`
`FURTHER ORDERED that by January 19, 2017, Patent Owner may
`file in each of IPR2015-01956 and IPR2015-01957 respectively a response
`to Petitioner’s submission that does not exceed five (5) pages.
`
`
`4
`
`
`PETITIONER:
`Joseph A. Micallef
`Russell E. Cass
`Erik J. Carlson
`Ryan Phelan
`Vernon M. Winters
`SIDLEY AUSTIN LLP
`iprnotices@sidley.com
`rcass@sidley.com
`ecarlson@sidley.com
`rphelan@sidley.com
`vwinters@sidley.com
`
`
`
`PATENT OWNER:
`James P. Murphy
`Henry A. Petri, Jr.
`Q Todd Dickinson
`POLSINELLI PC
`jpmurphy@polsinelli.com
`hpetri@polsinelli.com
`tdickinson@polsinelli.com
`
`Tim R. Seeley
`James R. Hietala
`INTELLECTURAL VENTURES
`tim@intven.com
`jhietala@intven.com
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